ISOSOL | Decision 2537242 - ANGELINI FARMACEUTICA, S.A. v. Vita Research S.r.l.
Date Published: Sep 24, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 537 242
Angelini Farmaceutica, S.A., Calle Osio, 7-9, 08034 Barcelona, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1o Puerta, 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Vita Research S.r.l., Via Variante di Cancelliera 4, 00040 Ariccia (Roma), Italy (applicant), represented by Barzanò & Zanardo, Via Piemonte 26, 00187 Roma, Italy (professional representative).
On 18/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 537 242 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 784 756 for the figurative mark
. The opposition is based on Spanish trade mark registration No 13 784 756 for the word mark ‘IPSODOL’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 13 784 756.
Decision on Opposition No B 2 537 242 page: 2 of 10
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 24/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 24/03/2010 to 23/03/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 5: Pharmaceutical and veterinary preparations; hygiene products for medical purposes; dietetic substances adapted for medical use, food for babies; adhesive plasters; materials for stopping teeth and for dental impressions; disinfectants; products for destroying harmful animals; fungicides, herbicides.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 11/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/03/2016 to submit evidence of use of the earlier trade mark. On 16/03/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Copies of more than 300 invoices, dated between 2012 and the beginning of 2015, addressed to clients in various cities in Spain. They demonstrate sales of a lotion under the mark ‘IPSODOL’.
Copies of price lists for the opponent’s products for 2012, 2013, 2014 and 2015,
including prices for ‘IPSODOL’ products.
A copy of a report demonstrating the use of the trade mark
for a drug for the treatment of arthritis.
A copy of an advertisement in a specialist pharmaceutical publication, dated 2015,
showing the trade mark
used to designate a topical analgesic.
A document from Agencia Española de Medicamentos y Productos Sanitarios (the
Spanish Medicines Agency) referring to a drug called ‘IPSODOL’.
Decision on Opposition No B 2 537 242 page: 3 of 10
Press articles, dated 22/10/2012 and 24/10/2012, published in specialist publications, relating to the entry of ‘IPSODOL’ into the market
.
A copy of a patient information leaflet from Agencia Española de Medicamentos
about the medical compound ‘IPSODOL’.
A screenshot from the opponent’s website, dated 18/02/2016, showing an image
of product packaging labelled with the mark ‘IPSODOL’.
The documents filed, namely the invoices, show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence, namely the press articles published in specialist publications, most of the invoices and most of the price lists, is dated within the relevant period. The opponent also submitted copies of a report and of an information leaflet with which the products were sold, which did not, however, show complete dates. Nonetheless, these documents have to be viewed in conjunction with the evidence that is dated; they may, therefore, still be taken into consideration.
The documents filed, namely the press articles published in specialist publications, most of the invoices and most of the price lists, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It is clear from the evidence that the opponent distributed or provided goods bearing Spanish trade mark registration No 13 784 756 on the Spanish market. The Opposition Division therefore has sufficient information regarding the commercial activities of the opponent during the relevant period. The invoices and the advertisements prove that the use of the sign in Spain was more than mere token use. Therefore, these documents prove the duration and frequency of use of the mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13, TrinkFix,
Decision on Opposition No B 2 537 242 page: 4 of 10
EU:T:2014:1070, § 28-38). A depiction of the mark on packaging, catalogues, advertising material or invoices relating to the goods in question constitutes direct evidence that the mark has been genuinely used.
In the present case, earlier Spanish trade mark registration No 13 784 756 is registered for the word mark ‘IPSODOL’. The invoices refer to goods indicated by the verbal element ‘IPSODOL’. In the advertisement, the press articles and the product
images, the mark appears as
.
The use of a slightly stylised red typescript on a white background is an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the earlier mark, ‘IPSODOL’, which was registered as a word mark.
The additional elements ‘Capsaicina crema 0,075%’, which are used together with the word ‘IPSODOL’, merely designate the nature of the goods offered by the opponent. In this regard, it should be noted that, if the addition is not distinctive, is weak and/or is not dominant – as in the present case – it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).
Therefore, the use of the earlier mark as described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
Decision on Opposition No B 2 537 242 page: 5 of 10
According to case-law, when applying the abovementioned provision the following should be considered:
...if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for drugs for the treatment of arthritis. These goods can be considered to form an objective subcategory of pharmaceutical preparations for treating arthritis.
The opponent failed to prove that its trade mark was genuinely used in the relevant territory during the relevant period for the remaining goods in Class 5.
Therefore, the Opposition Division will only consider the abovementioned goods, namely pharmaceutical preparations for treating arthritis, in its further examination of the opposition.
Decision on Opposition No B 2 537 242 page: 6 of 10
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
a) The goods
The goods on which the opposition is based, after the examination of the proof of use, are the following:
Class 5: Pharmaceutical preparations for treating arthritis.
The contested goods, after the applicant’s limitation of 09/08/2016, are the following:
Class 5: Physiological solutions for nasal rinsing; dilutions for aerosol therapy;
eye rinses; solutions for contact lenses.
Class 9: Eyepieces; contact lenses; containers for contact lenses; correcting
lenses (optics); opticians’ goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 5
The contested physiological solutions for nasal rinsing; dilutions for aerosol therapy; eye rinses are similar to the opponent’s pharmaceutical preparations for treating arthritis. They have the same source, that is, the pharmaceutical industry. They can also have the same end users and distribution channels.
The contested solutions for contact lenses are cleaners for removing protein from one’s contact lenses. These contested goods are similar to the opponent’s pharmaceutical preparations for treating arthritis, as they have the same purpose. They can also have the same producers, end users and distribution channels.
Contested goods in Class 9
Decision on Opposition No B 2 537 242 page: 7 of 10
The contested eyepieces; contact lenses; containers for contact lenses; correcting lenses (optics); opticians’ goods and the opponent’s goods in Class 5 are not similar. None of these contested goods has anything relevant in common with those of the earlier right in Class 5; their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they are not complementary to or in competition with one another. Therefore, they are dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be similar are directed at the general public as well as at professional consumers with specific professional knowledge or expertise, namely professionals in the medical and pharmaceutical fields.
It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
The Court has confirmed that the degree of attention is also higher than average for all goods in Class 5, including disinfectants (10/02/2015, T-368/13, Angipax, EU:T:2015:81, § 46).
c) The signs
IPSODOL
Earlier trade mark Contested sign
The relevant territory is Spain.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the
Decision on Opposition No B 2 537 242 page: 8 of 10
extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The earlier mark consists of the word ‘IPSODOL’. This word is meaningless for the public. Although it contains the sequence of letters ‘DOL’, which could allude to ‘pain’ in Spanish, there is no reason why the public would dissect the word artificially into different components, as there are no indications in the sign that would lead to its being split, such as the use of different colours to differentiate parts of the word, the use of hyphens, etc. Therefore, in relation to pharmaceutical preparations, this word is distinctive.
The contested sign is a figurative sign composed of the verbal element ‘ISOSOL’, which is meaningless for the relevant public. The dot of the letter ‘I’ is below the letter and is depicted as a drop, below which there are ripples. The drop in the contested sign will be perceived as a drop of a liquid, for example of a disinfectant or a medicated preparation; this is a commonplace device used in trade in relation to liquid disinfectants and medicated preparations. The public understands the meaning of the element and will not pay as much attention to this element as to the other, more distinctive, elements of the sign. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks with regard to these goods.
Conceptually, as previously established, part of the relevant public will not perceive any meaning in the signs. Therefore, neither of the signs has a meaning for the general public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
However, part of the relevant public will perceive the drop in the contested sign, which is weak for the relevant goods for the reason stated above; the other sign has no meaning. Since one of the signs (the earlier mark) will not be associated with any meaning, the signs are not conceptually similar.
Visually, the signs coincide in their first letter, ‘I’, the letter sequence ‘SO’ in the middle of the signs and their last two letters, ‘OL’. However, they differ in the second, additional, letter of the earlier mark, ‘P’, and in their antepenultimate letters, namely ‘D’ in the earlier mark versus ‘S’ in the contested sign. They also differ in their lengths and in the additional figurative elements of the contested sign, described above. Therefore, the signs are visually similar to a low degree.
Aurally, both signs begin with a letter ‘I’, both contain the letter sequence ‘SO’ and the sequence of vowels ‘I*O*O’, and they both end with a letter ‘L’. However, there are also relevant differences between the first syllable of each sign (‘I’ versus ‘IP’), where ‘P’ is a strong consonant that must be pronounced, and between their last syllables (‘DOL’ versus ‘SOL’). Therefore, the signs are aurally similar to an average degree.
Decision on Opposition No B 2 537 242 page: 9 of 10
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public at large in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods are partly similar and partly dissimilar to those of the earlier mark and they are directed, inter alia, at the public at large, whose degree of attention is high.
As concluded above, the conceptual aspect is neutral for part of the relevant public and for the remaining part of the relevant public the signs are not conceptually similar; the signs are visually similar to a low degree, whereas they are aurally similar to an average degree.
The distinctiveness of the earlier mark must be seen as normal.
The specific features of the conditions for the marketing of the goods at issue do not justify attributing more importance in the present case to the aural comparison than to the visual comparison. As regards pharmaceutical preparations available only on medical prescription, it should be observed that, since the trade mark of those preparations is written on a prescription by the prescribing doctor, the consumer is necessarily confronted with a visual representation of that mark before ordering them, in some circumstances orally, from a pharmacist.
The Court has established that it must be assumed that the goods at issue will generally be the subject, before their purchase, of a visual inspection on the part of the consumer when the professional from whom they ordered that product presents it to them (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 79-81).
In any event, account should be taken of the high degree of attention of consumers with regard to the goods in Class 5, regardless of whether or not they are issued with
Decision on Opposition No B 2 537 242 page: 10 of 10
a medical prescription, which weighs against a likelihood of confusion. Bearing in mind that the signs are visually similar to only a low degree and that the visual impression is not less important than the aural impression for such goods, the overall conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark ‘ISOSOL’ come from the undertaking that uses the earlier word mark ‘IPSODOL’ or from an undertaking economically linked to it.
Considering all the above and the overall impressions conveyed by the signs, the differences between the marks mean that the signs can be distinguished effectively; even taking into account the principle of imperfect recollection invoked by the opponent, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Octavio MONGE GONZALVO
Alexandra APOSTOLAKIS Pedro JURADO
MONTEJANO
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.